By Dennis Crouch
In the lead-up to March 16, 2013 the patent office received an influx of tens-of-thousands of patent application filings. That date is important because new applications filed on or after March 16, 2013 are examined under the first-to-file rules of the America Invents Act (AIA). At first glance, that influx suggests that applicants overwhelmingly prefer the prior first-to-invent rules. That suggestion makes sense since the AIA generally expands the scope of prior art available to adjudge patentability. However, the reality is that early filing might me more properly seen as a hedge against the potential that the new rules are too harsh on patentees. As I discuss below, the AIA offers an easy mechanism for any pre-AIA patent application to be transformed into an AIA patent application and it turns out that there are several major reasons why a patentee might prefer its patents to be adjudged under the AIA rules.
Transforming to an AIA Patent: The basic rule is that the first-to-file rules of the AIA apply to any application with at least one claim whose priority date is on or after March 16, 2013. The mechanism then is to file a follow-on application, such as a continuation-in-part (CIP) application, that adds some new matter and a new claim. The result of that filing then is that the entire application and resulting patent will be judged under the AIA first-to-file rules. To be clear, the CIP transforms the entire application to an AIA application – even claims that are identical to those that were in the original pre-AIA application and that were fully supported by that original pre-AIA application. Although I use a CIP as an example here, any new filing that properly adds new matter and that results in a related new claim will qualify.
The procedure is easy – the larger question is why a patent applicant would prefer an AIA patent to a pre-AIA patent. Some reasons:
- AIA patents are (likely) not subject to being invalidated based upon pre-filing secret sales; secret offers to sell; or secret uses.
- AIA patents have expanded the scope of the Create Act so that would-be anticipating prior art is also negated. The basic idea is that non-public prior filings by a research partner will not negate patentability.
- AIA patents that stem from a foreign-filing count as prior art as of their priority filing date. This change effectively overrules the Hilmer doctrine and essentially makes AIA patents (and their associated published applications) much more powerful as a form of prior art.
- At the same time, claims that were fully supported by the original priority filing will still get that priority date even when being adjudged under the new law.
Depending upon your particular factual situation, these reasons may justify a transformation of a pre-AIA application to an AIA application. Directly on point, this opportunity suggests that attorneys revisit pending pre-AIA cases that involved some pre-filing commercial activity to nail down whether any pre-filing sales activity took place. This issue is especially important when you consider cases like Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc., 726 F.3d 1370 (Fed. Cir. 2013). In that case the Federal Circuit found the patent-in-suit invalid based upon an offer from a foreign supplier to produce the product on behalf of the patentee. That is the sort of secret on-sale activity that will not serve as prior art for AIA patents. If that pre-filing on-sale activity was kept confidential then a transformation to an AIA application may make sense.
The transformation to an AIA application should probably be seen as a hedge rather than transformation because it does not require abandonment of the pre-AIA application. Thus, the same original priority filing that was filed before March 16, 2013 could result in a family of patents, some of which are adjudged under the pre-AIA rules and others that are adjudged under the AIA rules. The basic business question then for these pending pre-AIA questions is not whether the potential AIA patent is more likely to be valid than a pre-AIA patent. Rather, the hedging question is whether the addition of an AIA patent covering parallel subject matter adds enough value to be worth the costs.
There are a number of caveats to this procedure. Here are three. First, as I mentioned above, the transformation process requires the addition of new matter and a new claim that includes some of that new matter. I would expect some equitable risk for patent applicants in situations where it is clear that the new matter was only added as a formality in order to use this procedure. Defendants could potentially raise inequitable conduct or laches defenses based upon a patentee's claiming that some new matter was patentable when the only true purpose of the new matter was for the old claims to be interpreted under the new rule. In a similar vein, this approach raises double-patenting questions and it is somewhat unclear how double patenting issues will be resolved under the AIA. Finally, it is important to make clear that these transitional applications will not avoid 102(g) prior art based upon the transitional provisions found in the AIA.
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Note, I had been thinking some about this issue but my post here was triggered by a recent presentation by Bryan Diner from Finnegan who, in turn, recognized Tom Irving and his related Jedi Master Mixer strategy.